• Aptiv Services US, LCC v. Microchip Technology Inc.Institution denied
  PTAB · Nov 7, 2024 · IPR2024-00803 · APJ Jason M Repko · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–18 obvious over Verhaege, Verhaege and Miller, or Ker.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2

  • Skill levelOther

    “(‘POSITA’) in the field of the ’665 patent in 2007 would have at least a Master’s degree in electrical engineering, computer engineering, or a related field and three to five years of experience in integrated circuit design.” Pet. 10 (citing Ex. 1002 ¶ 51). Patent Owner argues that Petitioner’s definition is “excessively high.” Prelim. Resp. 3 n.1. In Patent Owner’s view, “a POSITA would have had a bachelor’s degree in electrical engineering or an equivalent technical degree and two years of experience in mixed-signal (i.e., analog/digital) circuit design.” Id. (citing Ex. 2003 ¶¶ 30–34). We need not resolve this dispute because our decision would be the same under either definition.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In Patent Owner’s view, “the claims require sharing ESD charge from one pad with a different I/O pad.” Prelim. Resp. 27. Patent Owner argues that charge sharing is the only way that charging the pad capacitance can reduce a maximum voltage, as recited. Id. at 24–25. Apart from the charge sharing, Patent Owner argues that the recited enable or control circuitry is not located in the circuit where the ESD event occurs. Id. at 27–33. Patent Owner argues that Petitioner disagrees with this interpretation. Id. Petitioner, though, argues that it would have been obvious to duplicate Verhaege’s and Ker’s protection circuits. See, e.g., id. at 18 (discussing claim 1 and Verhaege), 48 (discussing the Verhaege-Miller combination), 66 (discussing claim 1 and Kerr). For example, Petitioner argues that “a POSITA would have been motivated to use the improved protection circuit of Verhaege, apply it at every I/O pad, and share the ESD energy across multiple pad circuits as taught by Miller.” See id. at 48 (emphasis added). From statements like these, Patent Owner draws the conclusion that Petitioner must also be interpreting the claims to require charge sharing. Prelim. Resp. 25–27. For the reasons discussed in Section II.C below, Petitioner has not shown a reasonable likelihood of showing that any claims are unpatentable even under the implied claim construction used in its obviousness rationale. The Board need not expressly construe any claims in reaching that conclusion.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Petitioner argues, “It would have been obvious to a POSITA that, because an ESD event could occur at any I/O pad, the Verhaege invention should be repeated at every I/O pad.” Pet. 18 (citing Ex. 1002 ¶ 67); id at 30–32 (claim 6); id. at 43 (claim 14). Yet Petitioner acknowledges that “there were many obvious ways to activate multiple circuits during an ESD event.” Id. at 51. The Petition does not sufficiently explain why it would have been obvious to have chosen the way that is claimed. See id. at 18, 30– 32, 43. Rather, Petitioner’s obviousness rationale appears to be based on impermissible hindsight gleaned entirely from the challenged patent’s 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). For this additional reason, Petitioner has not shown a reasonable likelihood of prevailing in its challenges to claims 1, 6, and 14.” slip op. at 15

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,564,665
• Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Nov 1, 2024 · IPR2022-01421 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–30 are unpatentable: claims 1–5, 8–24, and 26–30 as obvious over Roese, Golnabi, Huima, and Hayter; claims 6, 7, and 25 with Esbensen added.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 5 (citing Ex. 1003 ¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art, and points to an equivalent level adopted in the ’148 FWD. See PO Resp. 6. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, ordinary skill in the art for purposes of this Decision.” slip op. at 8

  • PTAB / AIA Trials › §315(e) estoppelMixed

    “Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “caching occur “while the rule sets are being swapped.” Id. at 14–15. Patent Owner recites the surrounding steps or processes to the “caching the one or more packets” limitation, and asserts that the limitation requires “the packets are cached while the rule sets are being swapped.” Id. Although Patent Owner has provided the context of the claim limitation, we are not persuaded that such a stricture needs to be imported into the claim limitation itself. The “caching the one or more packets” limitation itself does not require that such caching can only occur while the rule sets are being swapped. The plain meaning of caching packets alone does not require such a restriction. The independent claims employ “comprising” language and could allow, for example, for the caching of packets, after the signal to process packets in accordance with the second rule set has been received, even if the swapping of rule sets has not yet occurred. Patent Owner’s construction attempts to incorporate other aspects of the claims into a single limitation that is not so limited under its plain and ordinary meaning. We are not persuaded that specifying when the caching occurs, i.e., while the rule sets are being swapped, is integral to the plain and ordinary meaning of “caching the one or more packets.”” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “to its temporal aspect of when caching of packets occurs, i.e., its claim construction that such caching occurs during a swapping of rule sets. As discussed above in Section II.B, we are not persuaded that the limitation “caching the one or more packets” requires that the caching must occur only while the rule sets are swapped. We are persuaded, however, that Roese, Huima and Hayter teach, as proposed by Petitioner, the caching of at least some portion of a packet while rule sets are being swapped. the rapid response identifier signal is received, the response system initiates the process of configuring the forwarding engine with the one or more policies and/or PERs, and Huima teaches that in response to receiving a signal to change the rule set, packet processing pauses. Ex. 1005 ¶¶ 47, 52; Ex. 1006 ¶ 31. We agree with Petitioner’s assertion that persons of ordinary skill in the art would have understood that a network device should pause the processing of any pending packets and any incoming packets that arrive after the instruction to change the rule set but before the change is completed, in view of Roese and Huima. Pet. 38 (citing Ex. 1003 ¶ 171). Further, we continue to be persuaded that Hayter teaches using a packet processor with an integrated cache to store at least portions of packets in the L2 cache, and we are persuaded that such storage would occur while awaiting processing to begin again. Pet. 39–40 (citing Ex. 1007, 1:40–48, 3:53–59, 6:3–26, 24:34– 36; Ex. 1003 ¶¶ 178–179). We are persuaded that this teaches or suggests that any caching of packets, or portions thereof, would occur in the period between when a signal is received to change rule sets and when processing of packets reoccurs under the new rule set. As such, we consider Patent Owner’s arguments in the context of whether the combination of Roese, Golnabi, Huima, and Hayter would have taught or suggested to one of ordinary skill in the art that entire packets should be cached in the combined system.” slip op. at 26

  Patent outcomesUS 10,681,009 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,681,009
• Google LLC v. Dialect, LLCInstituted
  PTAB · Oct 23, 2024 · IPR2024-00752 · APJ George R Hoskins · IPR · Institution

  The Board instituted IPR on claims 1–27 on all asserted grounds, finding a reasonable likelihood of success on at least claim 1 over Coffman and declining § 325(d) denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “(iii) Conclusion as to Claim 1 We conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable as having been obvious over Coffman.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “synchronizing” of context information and Coffman’s “updating” of context information. See Prelim. Resp. 1–2, 18, 20–23. However, this overlooks that Coffman describes its “updating” of context information as “the exchange of information to coordinate the conversation involving multiple devices,” such as Coffman’s master device and slave devices. Ex. 1003, 22:32–23:15 (emphasis added), 25:10–14, 26:28–27:20. Based on the present record, we are persuaded by Mr. Schmandt’s testimony that this results in synchronization of context information between the devices, such that (for example) the context stack of Coffman’s master device is updated based on the context stack of Coffman’s slave device(s). See Ex. 1002 ¶¶ 70–71. This is consistent, for example, with the ’652 patent’s description of “[t]he synchronization process” as “attempt[ing] to determine which version of a data element or an agent are the newest or most up-to-date and propagates that element,” including replacing “a portion of the database.” Ex. 1001, 17:25–32. slip op. at 25

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Patent Owner appears to be relying on an implicit claim construction that the term “synchronize” requires perfect synchronization, not allowing any deviation between the respective context stacks of the synchronized devices. This implicit claim construction is contradicted by the ’652 patent specification, which contemplates that “[t]he synchronization may be performed automatically when any two or more of the computers are connected to these networks,” or “[a]lternatively . . . the synchronization” slip op. at 26

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “We conclude, per Advanced Bionics, that the Examiner erred in “overlooking specific teachings” of Coffman / Coffman ’574 when allowing the ’652 patent to issue. Advanced Bionics, at 8–9 & n.9; see also id. at 10 (“[I]f the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive[.]”). Here, the Examiner cited Coffman ’574 as a considered reference, but did not cite Coffman ’574 as the basis for any claim rejections. See supra Section IV.B.1. Nor did the Examiner express any reasons for allowance over Coffman ’574. See id. Patent Owner’s argument that the Examiner allowed the ’652 patent claims over Coffman ’574 for the same reasons that the Examiner allowed the claims over the unrelated Mumick reference is not supported by the prosecution history evidence. In particular, the Examiner cited Mumick’s synchronization of navigation histories as being different from the claimed synchronization of context stacks/sets. See Ex. 1012, 170–171, 447. Coffman / Coffman ’574, by contrast, specifically discloses context stacks/sets. See supra Section III.E.2(ii) (comparing Coffman with claim 1 of the ’652 patent). Patent Owner does not cite to anything in the prosecution history to establish the Examiner considered the specific teachings of Coffman / Coffman ’574 cited in the Petition as disclosing the synchronization of context stacks/sets recited in claims 1, 14, and 20 of the ’652 patent. Indeed, accepting Patent Owner’s reasoning would prove too much, as it would mean the Examiner concluded all of the twelve initially-cited references (see Ex. 1012, 175) as well as all of the approximately 650 later-cited references (see id. at 450–477) were distinguished from the allowed claims by failing to disclose or suggest synchronizing context stacks/sets, because the same reasons for allowance over Mumick were provided in both instances (see id. at 170–171, 447). Thus, we conclude Petitioner’s case for obviousness over Coffman is not a mere “disagreement with a specific finding of record by the Office” during prosecution of the ’652 patent. Advanced Bionics, at 10–11.” slip op. at 38

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,849,652
• Google LLC v. Dialect, LLCInstitution denied
  PTAB · Oct 15, 2024 · IPR2024-00746 · APJ Brian J Mcnamara · IPR · Institution

  Institution was denied for claims 1–9 and 12 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “processes the request formulated in step 1[f] because the application carries out processing in accordance with the request. Pet. 41 (citing Ex. 1002, Schmandt Decl. ¶ 136 (as discussing Zadrozny’s conferencing schedule example)). Noting that a domain agent provides a functionality for a particular area or realm, such as a particular subject matter or device, Patent Owner argues that Coffman’s conversationally aware application does not teach limitation 1[g] because Coffman’s conversationally aware application does not process a request. Prelim. Resp. 29, 35–39. Noting that in Coffman, each application has its own context stack, Patent Owner argues that Coffman’s description of the context stack contents for various discourses does not support Petitioner’s theory that a conversationally aware application is invoked to process a user’s request. Id. at 37 (citing Ex, 1003, 27:1–2). As Patent Owner points out, calls to conversational sub-systems (see Ex. 1003, Fig. 2, 218, Fig. 4, 407) are hidden to the application. Prelim. Resp. 37 (citing Ex. 1003, 29:10–11), see also Ex. 1003, 29:7–9 (“CVM 401 will locate the requested conversational subsystem 407 (via the conversational subsystem services manager 406), drive its execution and return appropriately the results.”)). As a conversational subsystem, rather than a conversationally aware application executes the request, we determine that Petitioner has not demonstrated that Coffman discloses limitation 1[g]. d) Claim 1 conclusion In view of the above, we determine that Petitioner has not” slip op. at 29

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “speech recognition and processing (and more experience could substitute for less formal education, and vice versa).” Pet. 15 (citing Ex. 1002, Schmandt Decl. ¶¶ 11–15). Patent Owner does not explicitly dispute Petitioner’s characterization of a person of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of the level of ordinary skill appears consistent with the technology of the ’209 patent and the references, we apply Petitioner’s characterization of an ordinarily skilled artisan for purposes of this Decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither party has proposed a special definition or explicit construction of any claim term for purpose of this Decision. See Pet. 17 (“[e]xpress claim construction is unnecessary”); Prelim. Resp. 13 (“the Board need not engage in any pre-institution claim construction”). For purposes of this Decision, we understand Petitioner to propose that the claims be given their ordinary and customary meaning as understood by a person of ordinary skill under Phillips. 37 C.F.R. 42.104(b)(3).” slip op. at 9

  • BurdenDecided for patent owner

    “processes the request formulated in step 1[f] because the application carries out processing in accordance with the request. Pet. 41 (citing Ex. 1002, Schmandt Decl. ¶ 136 (as discussing Zadrozny’s conferencing schedule example)). Noting that a domain agent provides a functionality for a particular area or realm, such as a particular subject matter or device, Patent Owner argues that Coffman’s conversationally aware application does not teach limitation 1[g] because Coffman’s conversationally aware application does not process a request. Prelim. Resp. 29, 35–39. Noting that in Coffman, each application has its own context stack, Patent Owner argues that Coffman’s description of the context stack contents for various discourses does not support Petitioner’s theory that a conversationally aware application is invoked to process a user’s request. Id. at 37 (citing Ex, 1003, 27:1–2). As Patent Owner points out, calls to conversational sub-systems (see Ex. 1003, Fig. 2, 218, Fig. 4, 407) are hidden to the application. Prelim. Resp. 37 (citing Ex. 1003, 29:10–11), see also Ex. 1003, 29:7–9 (“CVM 401 will locate the requested conversational subsystem 407 (via the conversational subsystem services manager 406), drive its execution and return appropriately the results.”)). As a conversational subsystem, rather than a conversationally aware application executes the request, we determine that Petitioner has not demonstrated that Coffman discloses limitation 1[g]. d) Claim 1 conclusion In view of the above, we determine that Petitioner has not demonstrated that the combined teachings of Coffman, Kanevsky, Kneser, and that Petitioner has not shown a reasonable likelihood it would prevail in its challenge to claim 1 based on the combined teachings of these references.” slip op. at 29

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,398,209
• Google LLC v. Dialect, LLCInstitution denied
  PTAB · Oct 11, 2024 · IPR2024-00751 · APJ George R Hoskins · IPR · Institution

  The Board denied institution because Google did not show a reasonable likelihood of prevailing on any challenged claim, failing to show Coffman identifies a domain agent associated with a matching context-stack entry.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). B. Legal Standards — Obviousness A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 8

  • BurdenDenied

    “institution of review, Petitioner’s contention that Coffman’s CVM 14 / 202 / 401 includes a processor that identifies a domain agent (i.e., one of Coffman’s conversationally aware applications 11) associated with an entry in a context stack (i.e., context stack 217 / 405) that matches information in a merged transcription of user inputs. Details are provided below, but in overview, we determine Coffman’s disclosure is too high-level and non-specific, and Mr. Schmandt’s supporting testimony is too conclusory, to justify institution here. See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 18

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “IV. POTENTIAL DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(d) Patent Owner urges us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution of review, on the basis that the Examiner considered and commented on Coffman and Kennewick during prosecution of the ’607 patent, and Petitioner’s reliance on Ross (in Ground One) and Lee (in Ground Two) does not cure a deficiency of Coffman relating to merged transcriptions that was recognized by the Examiner. See Prelim. Resp. 3–4, 14, 44, 47–50. Petitioner provides opposing arguments. See Pet. 10–12. In light of our determination above to deny institution on the merits per 35 U.S.C. § 314(a), we do not reach the § 325(d) issues raised by Patent Owner.” slip op. at 25

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “institution of review, Petitioner’s contention that Coffman’s CVM 14 / 202 / 401 includes a processor that identifies a domain agent (i.e., one of Coffman’s conversationally aware applications 11) associated with an entry in a context stack (i.e., context stack 217 / 405) that matches information in a merged transcription of user inputs. Details are provided below, but in overview, we determine Coffman’s disclosure is too high-level and non-specific, and Mr. Schmandt’s supporting testimony is too conclusory, to justify institution here. See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,447,607
• Copeland Comfort Control LP / Ecobee Technologies Ulc v. Ollnova Technologies Ltd.All claims unpatentable
  PTAB · Oct 1, 2024 · IPR2024-00131 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 3–8, 14, 15, and 18 are unpatentable as obvious over the Kates-711 grounds; the Board did not reach the alternative Kates-505 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 13–14 (citing Ex. 1002 ¶ 44–47). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’887 patent and the prior art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “sensed condition outside a predetermined range.” Patent Owner’s proposed construction of the second wherein clause replaces the word “suspended” with “that would otherwise occur is stopped.” PO Resp. 8–9 (“emphasis omitted”). This phrase is not part of claim 1. Nonetheless, adopting Patent Owner’s proposed construction could potentially render the second wherein clause superfluous because the first wherein clause does not require transmission of the most recent reading to occur when the change is within the predetermined range. Consequently, the language of claim 1 does not require or suggest Patent Owner’s proposed construction.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “recent reading of the indicator stored in the memory during a period of a transmission interval in response to detecting a change in the sensed condition outside a predetermined range.” Ex. 1001, 14:63–67. This limitation also requires that “during the period of the transmission interval” the transmission “is suspended in response to detecting a change in the sensed condition within the predetermined range.” Id. at 14:67–15:4. Petitioner, therefore, must show that Kates-711 discloses a transceiver configured to transmit information or suspend transmission of the information during a “period” within a “transmission interval.” For the recited “transmission interval,” Petitioner contends that Kates’s “periodic intervals of ‘periodic monitoring’ is a [1.e] ‘transmission interval,’ during which there is a [1.e] ‘transmission period’ that includes a ‘report block.’” Pet. Reply 9. We agree with Petitioner for the following reasons. Kates describes the process shown in Figure 7 as follows: FIG. 7 is a flowchart showing one embodiment of operation of the sensor unit 102 wherein periodic monitoring is provided. In FIG. 7, a power up block 701 is followed by an initialization block 702, After initialization, the sensor unit 102 enters a low-power sleep mode. If a fault occurs during the sleep mode (e.g., the tamper sensor is activated), then the process enters a wake-up block 704 followed by a transmit fault block 705. If no fault occurs during the sleep period, then when the specified sleep period has expired, the process enters a block 706 where the sensor unit 102 takes a sensor reading from the sensor(s) 201. The sensor data is subsequently sent to the monitoring computer 13 in a report block 707. After reporting, the sensor unit 102 enters a listen block 708 where the sensor unit 102 listens for a relatively short period of time for instructions from monitoring computer 708. If an instruction is received, then the sensor unit 102 performs the instructions, otherwise, the process returns to the sleep block 703. Ex. 1004, 15:50–65. Based on this description of Figure 7, we find that Kates’s report block 707 corresponds to the recited “a period of the transmission interval” because it is a period of time when “sensor data is . . . sent to the monitoring computer.” Ex. 1004, 15:61. Further, block 707 is within an interval of “periodic monitoring” i.e., the process loop shown in Figure 7 beginning at block 703 and comprising steps 703, 706, 707, 708, 709, 710 and back to block 703. See also Ex. 1052 ¶ 22 (Dr. Neikirk testifying “each of [Kates’s] periodic intervals during which the ‘periodic monitoring’ process occurs is a ‘transmission interval’ . . . and the report block’ that occurs within this process is a transmission period.” (citations omitted)).” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “2. Analysis Motivation to Combine and Reasonable Expectation of Success Petitioner contends that “[w]hile Kates-711’s teachings not only render obvious but also disclose the ‘memory’ elements ([1.d]-[1.e], [5]), Hitt provides explicit teachings of a memory storing information as claimed.” Pet. 42. Petitioner further contends that Hitt’s memory 155 “stores instructions for execution by processor 156 and also stores periodically sampled sensor data for retrieval by the processor for processing and/or transmission.” Id. at 43 (citing Ex. 1002 ¶ 112; Ex. 1005 ¶¶ 65, 67– 68). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify Kates-711’s sensor units with Hitt’s teachings of ‘memory’ to achieve the beneficial and predictable result of utilizing a memory to securely store sensor readings.” Id. (citing Ex. 1002 ¶ 114). Petitioner argues that an ordinarily skilled artisan would have been further motivated to modify Kates-711 “by storing these sensor values in memory as taught by Hitt to improve reliability” in light of Hitt’s teaching that “storage of sensor values in memory . . . ensur[es] that the values are available for calculations and not unintentionally lost or erased, e.g., due to power outages or interruptions.” Id. at 44–45 (citing Ex. 1002 ¶ 116; Ex. 1005 ¶¶ 67–68). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because Kates-711 “discloses that its controller may be a ‘conventional programmable microcontroller’; such microcontrollers were well-understood to commonly use a memory to, e.g., track data variables used for control applications.” Pet. 45 (citing Ex. 1002 ¶ 117). We have reviewed Petitioner’s evidence and contentions and find that Petitioner establishes that an ordinarily skilled artisan would have been motivated to modify Kates-711 with the teachings of Hitt and would have had a reasonable expectation of success. Ex. 1002 ¶¶ 112–117.” slip op. at 37

  Patent outcomesUS 7,746,887 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,746,887
• Copeland Comfort Control LP / Ecobee Technologies Ulc v. Ollnova Technologies Ltd.All claims unpatentable
  PTAB · Oct 1, 2024 · IPR2023-00626 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 3–8, 14, 15, and 18 are unpatentable as obvious over the Kates-711 grounds; the alternative Kates-505 grounds were not reached.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “For these reasons, in order to resolve the present controversy, we determine that the plain and ordinary meaning of “suspended”, as used in the challenged claims, encompasses both where a transmission that would otherwise occur is suspended by an action such as overriding a flag and where a transmission is not made because there is no change in an indicator or a change does not exceed a limit. Upon review the parties’ respective contentions, we determine that no other express constructions of any other claim term is required for this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “2. Analysis Motivation to Combine and Reasonable Expectation of Success Petitioner contends that “[w]hile Kates-711’s teachings not only render obvious but also disclose the ‘memory’ elements ([1.d]-[1.e], [5]), Hitt provides explicit teachings of a memory storing information as claimed.” Pet. 42. Petitioner further contends that Hitt’s memory 155 “stores instructions for execution by processor 156 and also stores periodically sampled sensor data for retrieval by the processor for processing and/or transmission.” Id. at 43 (citing Ex. 1002 ¶ 112; Ex. 1005 ¶¶ 65, 67– 68). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify Kates-711’s sensor units with Hitt’s teachings of ‘memory’ to achieve the beneficial and predictable result of utilizing a memory to securely store sensor readings.” Id. (citing Ex. 1002 ¶ 114). Petitioner argues that an ordinarily skilled artisan would have been further motivated to modify Kates-711 “by storing these sensor values in memory as taught by Hitt to improve reliability” in light of Hitt’s teaching that “storage of sensor values in memory . . . ensur[es] that the values are available for calculations and not unintentionally lost or erased, e.g., due to power outages or interruptions.” Id. at 44–45 (citing Ex. 1002 ¶ 116; Ex. 1005 ¶¶ 67–68). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because Kates-711 “discloses that its controller may be a ‘conventional programmable microcontroller’; such microcontrollers were well-understood to commonly use a memory to, e.g., track data variables used for control applications.” Pet. 45 (citing Ex. 1002 ¶ 117). We have reviewed Petitioner’s evidence and contentions and find that Petitioner establishes that an ordinarily skilled artisan would have been motivated to modify Kates-711 with the teachings of Hitt and would have had a reasonable expectation of success. Ex. 1002 ¶¶ 112–117.” slip op. at 37

  • BurdenFwd all claims unpatentableUnpatentable

    “III. CONCLUSION12 Weighing the competing evidence and testimony, we determine that Petitioner establishes by a preponderance of the evidence that claims 1, 3–8, 14, 15, and 18 of the ’887 patent are unpatentable.” slip op. at 46

  Patent outcomesUS 7,746,887 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,746,887
• Copeland Comfort Control LP v. Ollnova Technologies Ltd.All claims unpatentable
  PTAB · Oct 1, 2024 · IPR2023-00624 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–5, 7–11, 13–16, and 20–21 are unpatentable: claims 1–5, 7–11, and 20–21 over McFarland, and claims 13–16 over McFarland and Kates-089.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Claim 1 recites “a multi-sensor package configured to detect a plurality of variables and generate sensor data for each detected variable.” Ex. 1001, 10:46–48. Both parties agree that a “multi-sensor package” is a single packaged device with multiple sensors, not a group of individual sensors. See PO Resp. 6; Pet. Reply 2. Claim 1 does not recite a multi-sensor package with “multiple operational sensors.” Patent Owner does not explain the difference between operational sensors and sensors “configured” as recited in claim 1 or why claim 1 should be construed as requiring an “operational” limitation that does not appear in the claim. Consequently, a requirement that the sensors comprising the package be “operational” is neither required by claim 1 nor suggested by the language of claim 1.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 10–11 (citing Ex. 1002 ¶¶ 46–49). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See PO Resp. We apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’282 patent and the prior art.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “McFarland discloses an exemplary sensor 209 that “is configured as any of a temperature sensor, humidity sensor, fire sensor, pressure sensor, smoke sensor, occupancy sensor, air quality sensor, gas sensor, O2, CO2, or CO sensor, accelerometer, velocity sensor, [or] combinations thereof” and “may be . . . micro-mechanical sensors . . . or larger sensors for sensing any condition or parameter.” Ex. 1027 ¶ 43 (emphasis added). Patent Owner submits that paragraph 43 of McFarland describes “a device . . . that sense[s] conditions, parameters and/or events such as an environmental condition in a building.” PO Resp. 28 (emphasis added). Based on the foregoing, we find that McFarland teaches “a multi-sensor package configured to detect a plurality of variables.” Ex. 1002 ¶ 72 (“sensor 209 may be configured to detect multiple different variables including temperature, humidity, and other variables”); Ex. 1027 ¶ 43. McFarland further discloses “sensor 209 generates information or data related to the sensed or monitored condition” and “output as one or more signals that may be read by the processor 214.” Ex. 1027 ¶ 43. McFarland further discloses that “information may be generated in response to a physical stimulus such as light, sound, pressure, heat, magnetism, motion, and/or acceleration” that “may be detected as a result of sensing or monitoring the conditions or parameters.” Id.; see also id. ¶ 44 (“A signal generated by the sensor 209 may be an indicator of the sensed condition.”). McFarland also discloses that “processor 214 implements a control process for the device 207” that “may be implemented based on a signal that is read from and/or provided by the sensor 209, such as a measured value of a parameter, an indicator of a sensed condition and/or status of an event.” Id. ¶ 39. Thus, we find McFarland teaches that sensor 209 “generate[s] sensor data for each detected variable.” Ex. 1002 ¶ 74 (“For each condition that it monitors, the sensor generates and outputs sensor data for each measured variable in the form of ‘a measured variable’ or ‘indicator.’” (citing Ex. 1027 ¶¶ 39, 45, 47)). For the foregoing reasons and after reviewing Petitioner’s evidence in light of Patent Owner’s contentions, we find that McFarland teaches this limitation.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Motivation to Combine/Reasonable Expectation of Success Petitioner contends that McFarland discloses that a wireless automation device wakes up and enters a standby or sleep mode in response to a report instruction. Pet. 46. Petitioner acknowledges that McFarland “does not explicitly state that the ‘report instruction’ includes a ‘wake-up command’ or describe how the device is instructed to return to a ‘sleep’ mode between reporting intervals.” Id. (citing Ex. 1027 ¶¶8, 18, 48, 62). Petitioner next contends that Kates-089 “teaches that such a ‘report instruction’ comprises a ‘wake-up command,’ and that a controller issues a ‘standby mode’ instruction (i.e., a ‘power down command’).” Id. (citing Ex. 1029 ¶¶ 78, 82, 86). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify McFarland with” the teachings of Kates-089 “to advantageously facilitate reporting data both periodically and in response to commands while conserving power via ‘wake-up’ and ‘standby’ (i.e., power-down) commands.” Id. (citing Ex. 1002 ¶ 147; Ex. 1027 ¶ 62; Ex. 1029 ¶¶ 40, 74–75, 82, 86); id. at 47 (arguing that an ordinarily skilled artisan in light of Kates-089 “would have been motivated to modify McFarland’s ‘report’ instruction to include a wake-up command” (citing Ex. 1002 ¶ 149)) (emphasis omitted). Petitioner further contends that an ordinarily skilled artisan would have been motivated to combine McFarland and Kates-089 “to save power consumed during, e.g., the 99.9% of the polling interval when the device may otherwise be unnecessarily turned on.” Id. at 48 (citing Ex. 1002 ¶ 150). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success “applying Kates-089’s wake-up and power-down command teachings to McFarland’s wireless automation device” because “McFarland already teaches that the wireless automation device wakes up and powers down in response to certain commands[] and such commands were well understood.” Pet. 48 (citing Ex. 1002 ¶ 151; Ex. 1005 ¶ 32; Ex. 1027 ¶¶ 8, 18, 48, 62; Ex. 1032, 12:48–54; Ex. 1033, 12:16– 22) (emphasis omitted). Patent Owner does not address motivation to combine or reasonable expectation of success for claim 13. See PO Resp. 26–35. We have reviewed Petitioner’s evidence and contentions and find that” slip op. at 45

  Patent outcomesUS 8,224,282 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,224,282
• Aptiv Services US, LLC v. Microchip Technology, Inc.Instituted
  PTAB · Sep 25, 2024 · IPR2024-00646 · APJ Christopher L Ogden · IPR · Institution

  The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Al-Shyoukh and Ivanov.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “and Trademark Office under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’074 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Dr. Chen’s testimony, Petitioner argues that a person of ordinary skill in the art would have had “a Master’s Degree in Electrical Engineering, or alternatively a Bachelor’s Degree in Electrical Engineering and two years of experience working on analog circuit design.” Pet. 9 (citing Ex. 1002 ¶ 38). At this stage, Petitioner’s argument is uncontested, and it appears to be supported by the types of problems and solutions in the ’074 patent. See, e.g., Ex. 1001, 1:25–2:44. Thus, we adopt the formulation preliminarily for this decision.” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for petitioner

    “claim constructions that correspond to constructions it expects Patent Owner to assert. See Pet. 20 n.2. After Patent Owner filed its Preliminary Response, Petitioner notified us that the district court in the parallel district court litigation issued a claim construction order interpreting two terms relevant to this proceeding, as shown below: Claim Term District Court’s Construction” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “limitation was indefinite because it was subject to 35 U.S.C. § 112 para. 6 and the ’074 patent failed to disclose sufficient corresponding structure. See Ex. 3001, 9. However, in its Petition, Petitioner adopts what it understands to be Patent Owner’s claim-construction in the parallel proceeding: “that 1[d] is not a means-plus-function element under [§ 112 paragraph 6], and to the extent it is, the claimed function is to enable/disable the biasing circuit for reducing standby current, and the corresponding structure is the signal input line at node M in Figure 3.” Pet. 21–22. Assuming that limitation 1[d] does not invoke § 112 paragraph 6, Petitioner argues that “Al-Shyoukh discloses inputs from a biasing circuit into its LDO but does not specify a design,” but Ivanov discloses a specific design for implementing the recited enable/disable function, and a person of ordinary skill in the art would have had reason to incorporate Ivanov’s design into Al-Shyoukh’s LDO. Pet. 22–26 (citing Ex. 1004, 1732; Ex. 1005, 1:6–18, 3:43–49, 3:54–63, 4:26–33, 5:19–25, 6:7–22, 6:47–54, Figs. 1, 2; Ex. 1002 ¶¶ 60–70). Alternatively, if limitation 1[d] invokes § 112 paragraph 6 and Patent Owner is correct that the corresponding structure is the signal input line at node M in Figure 3 of the ’074 patent, Petitioner argues that this structure is identical to Ivanov’s input line 8. Pet. 26 (citing Ex. 1001, Figs. 1, 3; Ex. 1002 ¶ 69).” slip op. at 24

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,471,074
• Nintendo Co., Ltd. / Nintendo Of America Inc. v. American GNC CorporationInstituted
  PTAB · Sep 10, 2024 · IPR2024-00668 · APJ Lisa L Tsang · IPR · Institution

  The Board instituted IPR on claims 1 and 4 on all four §103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner must produce some evidence to place in dispute the issue of whether an unnamed real party in interest renders the petition timebarred, but Petitioner bears the burden of persuasion on this issue. See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242–44 (Fed. Cir. 2018) (holding that an “IPR petitioner bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest.”). Based on the arguments and evidence of record, we determine that Patent Owner has not 13 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. produced sufficient evidence to place in dispute the issue of whether STMicro should be named a real party in interest to this proceeding. Rather, at this stage, Patent Owner’s contentions regarding any relationship between Petitioner and STMicro constitute mere attorney argument because they are unsupported by any evidence of record. See Prelim. Resp. 19–21. For example, beyond self-serving allegations in Patent Owner’s district court complaint against Petitioner for infringement (see Ex. 2007 ¶¶ 46–56, 63– 74, cited in Prelim. Resp. 20), we are not apprised of any evidence to support the argument that STMicro is a supplier of Petitioner. To the contrary, Patent Owner’s evidence demonstrates that STMicro repeatedly asserts in the district court litigation that “ST[Micro] did not design, manufacture, or sell any STMicro IMU Components to [Petitioner].” See Ex. 2014, 13–18. Moreover, the evidence shows that STMicro does not acknowledge the existence of an indemnification agreement or any communications between it and Petitioner relating to the litigation, Patent Owner, or the ’648 patent. See id. at 18–20, 24–25. At best, Patent Owner’s evidence and arguments at this juncture establish only that Patent Owner previously filed a complaint against STMicro, asserting infringement of patents including the ’648 patent (see generally Ex. 2012); and that Patent Owner served a subpoena to compel STMicro to testify and produce documents in Patent Owner’s infringement suit against Petitioner (see generally Ex. 2014). The record before us is insufficient to demonstrate a relationship between Petitioner and STMicro sufficient to show that STMicro is a real party in interest. See Worlds, 903 F.3d at 1244.” slip op. at 16

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Patent Owner must produce some evidence to place in dispute the issue of whether an unnamed real party in interest renders the petition timebarred, but Petitioner bears the burden of persuasion on this issue. See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242–44 (Fed. Cir. 2018) (holding that an “IPR petitioner bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest.”). Based on the arguments and evidence of record, we determine that Patent Owner has not 13 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. produced sufficient evidence to place in dispute the issue of whether STMicro should be named a real party in interest to this proceeding. Rather, at this stage, Patent Owner’s contentions regarding any relationship between Petitioner and STMicro constitute mere attorney argument because they are unsupported by any evidence of record. See Prelim. Resp. 19–21. For example, beyond self-serving allegations in Patent Owner’s district court complaint against Petitioner for infringement (see Ex. 2007 ¶¶ 46–56, 63– 74, cited in Prelim. Resp. 20), we are not apprised of any evidence to support the argument that STMicro is a supplier of Petitioner. To the contrary, Patent Owner’s evidence demonstrates that STMicro repeatedly asserts in the district court litigation that “ST[Micro] did not design, manufacture, or sell any STMicro IMU Components to [Petitioner].” See Ex. 2014, 13–18. Moreover, the evidence shows that STMicro does not acknowledge the existence of an indemnification agreement or any communications between it and Petitioner relating to the litigation, Patent Owner, or the ’648 patent. See id. at 18–20, 24–25. At best, Patent Owner’s evidence and arguments at this juncture establish only that Patent Owner previously filed a complaint against STMicro, asserting infringement of patents including the ’648 patent (see generally Ex. 2012); and that Patent Owner served a subpoena to compel STMicro to testify and produce documents in Patent Owner’s infringement suit against Petitioner (see generally Ex. 2014). The record before us is insufficient to demonstrate a relationship between Petitioner and STMicro sufficient to show that STMicro is a real party in interest. See Worlds, 903 F.3d at 1244.” slip op. at 16

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “The Petition states, however, that “Petitioner provides a Sotera stipulation that, in the event of IPR institution, Petitioner will not pursue in district court any grounds of invalidity against the challenged claims that were or reasonably could have been asserted in IPR.” Pet. 5. The Director’s Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)14 (“Interim Procedure”) states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim 14 Available at www.uspto.gov/sites/default/files/documents/interim_proc_discretionary_de nials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. Accordingly, we decline to discretionarily deny the Petition in view of related district court litigation.” slip op. at 18

  • Skill levelSkill level patent owner adoptedOther

    “Relying on the Declaration of Dr. Young for support, Petitioner contends a person of ordinary skill in the art (“POSITA”) would have possessed a bachelor’s degree in electrical engineering or similar degree, with two to three years of practical experience designing and/or implementing systems that include sensors for measuring movement, such as acceleration and rotational position. . . . A skilled artisan could also have had more formal education and less practical experience, or vice versa. Pet. 5 (citing Ex. 1002 ¶¶ 12–14). Patent Owner counters that the skilled artisan would have had “at least a ‘Master’s Degree in Electrical or Electronics Engineering, and approximately five years of relevant experience in the development of control systems for inertial navigation, MEMS semiconductor processing, and analog circuit design.’” Prelim. Resp. 32 (citing Ex. 2008 (Declaration of Dr. Lawrence E. Larson) ¶ 57). On this preliminary record, we are persuaded for the reasons discussed below that Petitioner has shown a reasonable likelihood that it would prevail in demonstrating the unpatentability of at least one challenged claim of the ’648 patent, at least under Patent Owner’s proffered level of ordinary skill in the art. We recognize that Petitioner and its declarant, Dr. Young, propose a different level of ordinary skill in the art, and we expect the parties to address this issue and its implications on the merits of the asserted grounds during trial.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 6,671,648

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.